AirWair International Ltd. v. Zoetop Business Co., Limited
- Susan Illston
- 3:20-cv-07696
- U.S. District Court · Northern District of California
- 4
In AirWair International Ltd. v. Zoetop Business Co., Limited, Judge Illman denied Zoetop’s request for foreign discovery from NPS Shoes because it was inadequately justified and potentially burdensome.
Zoetop Business Co., Limited’s request for testimony and documents from NPS Shoes, Ltd. was denied; the ruling also protects the nonparty from unsupported and potentially burdensome discovery.
What happened
AirWair International Ltd. v. Zoetop Business Co., Limited concerns Zoetop’s request to obtain testimony and documents from NPS Shoes, a company in the United Kingdom, for use in AirWair’s trademark lawsuit against Zoetop.
Zoetop relied on an international evidence-gathering process and argued that NPS Shoes’ earlier disputes with AirWair could bear on AirWair’s trademark rights and Zoetop’s counterclaims. The court found that many requests were only marginally relevant or disproportionate, and that Zoetop had not adequately explained why it could not obtain the information from AirWair or public court records.
Judge Illman denied Zoetop’s request for foreign depositions and document production from NPS Shoes. The court also said Zoetop had not shown the requests were relevant, proportional, necessary, or important enough to justify imposing the burden on a nonparty.
The detailed version
- AirWair International Ltd. v. Zoetop Business Co., Limited · No. 3:20-cv-07696
- Susan Illston
- Dec. 23, 2021
Background
AirWair sued Zoetop over trademark infringement and dilution under federal and state law, false designation of origin, and unfair competition under state law. The dispute involves the design, manufacture, and sale of footwear. Zoetop asserted 15 affirmative defenses and six counterclaims concerning cancellation or restriction of trademark registrations and limitations on AirWair’s claimed trade-dress rights.
Zoetop sought permission to use the 1970 Hague Convention on Taking of Evidence Abroad in Civil or Commercial Matters to obtain deposition testimony and documents from NPS Shoes, Ltd., a third-party corporation in the United Kingdom. Zoetop said information about NPS Shoes’ earlier trademark-enforcement litigation with AirWair could bear on the validity of AirWair’s intellectual-property rights and Zoetop’s counterclaims.
Court’s analysis
The court applied the limits governing third-party discovery. Those limits require a party seeking discovery from a nonparty to show that the requested information is relevant and proportional to the needs of the case and that it could not be obtained from a party to the lawsuit. The court also considered the need to avoid imposing an undue burden on the nonparty.
The court found that most of Zoetop’s 19 proposed deposition topics and 18 document requests were either information that could be sought directly from AirWair, information that might be available in the public docket of the earlier litigation, or information of such remote and marginal relevance that the requests would be disproportionate and unduly burdensome.
The court also found Zoetop’s explanation inadequate. Zoetop said AirWair had refused to produce a corporate representative on 29 topics, but Zoetop had not moved to compel AirWair’s production. Zoetop also unsuccessfully attempted to serve a subpoena on NPS Shoes’ local representative before seeking foreign discovery in the United Kingdom. The court concluded that Zoetop had not shown the relevance, proportionality, necessity, or importance of the requested information, nor addressed whether the information originated in or could be obtained from the United States, whether alternative methods were available, or how the interests of the United States and United Kingdom would be affected.
Disposition
The court denied Zoetop’s request to engage in foreign depositions and document production from NPS Shoes in the United Kingdom. The ruling addressed discovery and did not decide the underlying trademark claims or counterclaims.
Read the full 4-page opinion on CourtListener, the free public archive maintained by the Free Law Project.